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Title: Terminal Disclaimer Post by Mark McCormick on Apr 19th, 2005, 12:31pm I would appreciate some advice on the following scenario: Have filed a patent application and it is rejected on the grounds of double patenting. Only some of the claims are actually at fault here. Can you file a terminal disclaimer for some of the claims in a patent but not for other claims? |
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Title: Re: Terminal Disclaimer Post by Wiscagent on Apr 19th, 2005, 12:57pm “A terminal disclaimer can be used to avoid an obviousness-type double patenting rejection. The disclaimer must include all claims of the rejected application even if only one claim is subject to the double patenting rejection.” – from the PRG Patent Bar Prep Course See CFR 1.321(b) and (c). |
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Title: Re: Terminal Disclaimer Post by JimIvey on Apr 26th, 2005, 9:18pm Thanks, Richard, for the precise authority. I believe you can split the case into two applications (cancel some claims and file them as a continuation). However, I doubt that will result in a net gain of patent term given the pendency of continuation applications. In short, it's feasible to do, but probably not practical. Regards. |
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Title: Re: Terminal Disclaimer Post by JS on Nov 20th, 2007, 4:28pm terminal disclaimer issue with a twist: Company A and Company B are co-assignees on patent 1 and patent 2. As co-assignees, they both have rights to 100% of the invention. Patent 2 has a terminal disclaimer based on the expiration date of patent 1. Normally with a terminal disclaimer, if the assignee re-assigns one of the patents, but not the other, then the other patent would not be enforceable. However, how does this play out if you have co-assignees? If company A re-assigned patent 2, would this render patent 1 unenforceable, even though there is still a common owner, company B? Any thoughts, references, case law, etc would be appreciated. |
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Title: Re: Terminal Disclaimer Post by Isaac on Nov 20th, 2007, 5:11pm on 11/20/07 at 16:28:04, JS wrote:
I'm not sure of the exact mechanics, but I really don't see any problem in principle with a terminal disclaimer in this situation. When two entities co-own a patent, it takes the cooperation of both parties to sue on the patent, so a terminal disclaimer restricting the ownership to two companies would not seem to create the problem where some poor infringer gets sued repeatedly by different owning entities. |
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Title: Re: Terminal Disclaimer Post by JS on Nov 27th, 2007, 6:19pm Yes, you are right, you can have co-owners of terminal disclaimer patents, however, MPEP section 804.02 states: terminal disclaimers must include a provision that the patent shall be unenforceable if it ceases to be commonly owned with the other application or patent if you have co-owners who hate each other, could one owner reassign one patent to screw the other owner out of being able to enforce the patents? |
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Title: Re: Terminal Disclaimer Post by Isaac on Nov 27th, 2007, 10:23pm on 11/27/07 at 18:19:01, JS wrote:
Those kinds of tricks would not be necessary. All coowners have to participate to sue someone. The surly coowner could simply refuse to participate in a law suit. |
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Title: Re: Terminal Disclaimer Post by JS on Nov 28th, 2007, 11:59am on 11/27/07 at 22:23:48, Isaac wrote:
expanding the hypo - A and B co-own patents 1 and 2 which are linked by terminal disclaimer. Patents 1 and 2 are licensed to C with the provision that the license is only enforceable against vaild patents. A without B's knowledge reassigns patent 1 to D. C upon finding out that A reassinged patent 1, C stops paying royalites. Can B even bring suit against C, since the patents are no longer commly owned by A and B? If B's ownership fulfills the commonly owned requirement, would B have to drag A and D into court with him? |
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